DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 6 is objected to because of the following informalities: “the cylindrical magnet” is believe to be referring to the magnet mentioned in claim 5 and should be –the magnet—to clarify its antecedent basis. The word positioned is also misspelled in line 2. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 15-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 13-18 of prior U.S. Patent No. 12,505,717. This is a statutory double patenting rejection.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,505,717. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are a mere broadening of the previously allowed claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reddy et al. US 2014/0339249 in view of Omura US 2019/0021955.
Reddy discloses a magazine assembly for storage of oral nicotine pods, the assembly comprising:
(Re claim 1) “a magazine having a wheel shape, comprising: an inner cylinder, a plurality of spokes extending radially from the inner cylinder, and a plurality of compartments formed between the plurality of spokes such that a single compartment is defined by a space between adjacent spokes” (20,22 figure 3). “a pod disposed in a compartment” (‘nicotine’ para 0062).
Reddy does not disclose a lock disk coupled to a base of the inner cylinder.
Omura teaches a lock disk coupled to a base of the inner cylinder (60,70,17’ figure 2A).
It would have been obvious to one skilled in the art to modify they system of Reddy to include a lock disk coupled to a base of the inner cylinder because it prevent unwanted dispensing.
(Re claim 2) Reddy does not disclose that the lock disk is sprung away from the magazine by flexing of a spring arm.
Omura teaches that the lock disk is sprung away from the magazine by flexing of a spring arm (70,80 figure 3B).
It would have been obvious to one skilled in the art to modify the system of Reddy to include that the lock disk is sprung away from the magazine by flexing of a spring arm because it the spring arm maintains the lock in to proper position to prevent dispensing.
(Re claim 3) Reddy discloses that the lock disk comprises a ferrous component.
Omura teaches that the lock disk comprises a ferrous component (80 figure 3B, ‘coil spring’ para 0047). Coil springs are normally made of spring steel.
It would have been obvious to one skilled in the art to modify the system of Reddy to include that the lock disk comprises a ferrous component because steel springs are reliable.
(Re claim 4) “the magazine assembly comprises a plurality of pods, and wherein each of the plurality of pods is disposed in one of the plurality of compartments” (20,22 figure 3, ‘nicotine’ para 0062).
Claim(s) 5,7-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reddy/Omura in view of Blum et al. US 2017/0193191.
(Re claim 5) “An apparatus for dispensing of oral nicotine pods, wherein the apparatus comprises” (‘nicotine’ para 0062, figure 1). “a body” (12,14 figure 1). “the magazine assembly of claim 1 disposed within the body” (20,22 figure 2). “a drive mechanism coupled to the magazine assembly and configured to guide at least one pod of the plurality of pods into a dispensing position” (16 figure 2). “an aperture located on the body and configured to allow for dispensing of the at least one pod from the dispensing position to an exterior environment” (19 figure 2).
Reddy/Omura does not disclose a magnet.
Blum teaches a magnet (para 0027).
It would have been obvious to one skilled in the art to modify the system of Reddy/Omura to include a magnet because it can help maintain the system in the assembled state.
(Re claim 7) “the drive mechanism comprises a motor, a power source, and a circuit board” (36,38,56 figure 5,6).
(Re claim 8) “the body further comprises an access restriction mechanism including at least one of a radio frequency chip or a biometric sensor” (para 0127).
(Re claim 9) “the body is formed in a cylindrical shape” (12,14 figure 2).
(Re claim 10) “the aperture is formed in a base wall of the cylindrical shape” (19,12 figure 2).
(Re claim 11) “the aperture is formed in a circumferential wall of the cylindrical shape” (19,14 figure 2).
(Re claim 12) “the power source comprises at least one of a battery or a piezoelectric hammer starter” (58 figure 7).
(Re claim 13) Reddy does not disclose that the power source is included in the magazine assembly and is disposed to make contact with the apparatus upon insertion of the magazine assembly.
Blum teaches that that the power source is included in the magazine assembly and is disposed to make contact with the apparatus upon insertion of the magazine assembly (‘battery’, ‘cartridge’ para 0027).
It would have been obvious to one skilled in the art to modify the system of Reddy/Omura to include that the power source is included in the magazine assembly and is disposed to make contact with the apparatus upon insertion of the magazine assembly because it prevents the need to recharge or replace a separate battery.
(Re claim 14) Reddy/Omura does not disclose that the magnet is a cylindrical magnet disposed axially within the inner cylinder of the magazine.
Blum teaches that the magnet is a cylindrical magnet disposed axially within the inner cylinder of the magazine (112 figure 5a).
It would have been obvious to one skilled in the art to modify the system of Reddy/Omura to include that the magnet is a cylindrical magnet disposed axially within the inner cylinder of the magazine because it allows the magnets to interact with components within the inner cylinder of the magazine without interfering with the storage area located outside of the inner cylinder.
Allowable Subject Matter
No prior art of record could be found to support a 102 or 103 rejection for claims 6 and 15-20.
Claim 6 and 15-20 contain the same allowable subject matter as that for claims 1-18 of US patent number 12,505,717.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R WAGGONER whose telephone number is (571)272-8204. The examiner can normally be reached Mon-Thurs 5am-330pm.
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TIMOTHY R. WAGGONER
Primary Examiner
Art Unit 3655 B
/TIMOTHY R WAGGONER/Primary Examiner, Art Unit 3655
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